Division 2 of the Federal Court of Appeals in Civil and Commercial Matters ruled that the registration of trademarks with the sole purpose of their subsequent sale is forbidden.
Daniel Isaac Levy, the plaintiff, requested the Federal Court of Appeals in Civil and Commercial Matters to cancel the registration of the trademark “COMPLOT”, owned by the defendant Pimark SA, for being registered by someone who, as a regular business, registers trademarks solely for its sale (Federal Court of Appeals, Division 2, Sept. 15, 2015, “Pimark SA v. Levy Daniel Isaac", Docket No. 6014/2009, and 2011 “Levy Daniel Isaac Carlos c. Pimark S.A.”, Docket No. 1620/2001). That is, without the intention to identify products or services.
In this regard, Section 24, paragraph b), of the Trademark Law No. 22,362 (the "Trademark Law") provides that “Trademark registrations are invalid […] [when registered] for their commercialization, by those regularly engaged in the registration of trademarks for that purpose”. Also Section 953 of the Civil Code (in force at that time), set forth the invalidity of any act contrary to moral and public mores.
On the basis of these provisions, the Court of Appeals concluded that the trademark “COMPLOT”, on which Pimark had based its opposition to the registration of the trademark application filed by Mr. Levy, should be declared invalid as it was shown that Pimark’s sole purpose was the commercialization of trademarks, which was contrary to the spirit of the Trademark Law and to one of its essential purposes: the non-registrability of purely speculative registrations.
